EU trademarks will no longer be protected in the UK after Brexit. What will happen to your EUTM depends on whether it has been registered or not on exit day: December 31, 2020.
Registered EU trademarks
Your registered EU trademark right will be automatically cloned into a UK trademark registration. You will not need to pay an official fee for this national UK right.
These UK rights will have the same legal status as if you had initially applied for a national UK trademark. It will maintain the same filing date as the EUTM. Your UK trademark will also keep the original priority date or UK seniority date, if such a claim has been made to the EUTM.
There will not be a UK registration certificate issued, but you will be able to access details about the new UK trademark in the official UK trademarks register at gov.uk.
Your comparable UK right will receive the same official number as the last eight digits of your EUTM with the addition of the prefix UK009.
Pending EU trademark applications
If your EUTM has not matured into a registration on exit day, you will need to actively apply for a national UK trademark application to receive protection in the UK. There is an official fee and AWA will also charge a fee for the filing of such an application. Please contact your trademark attorney for further details.
For a period of nine months after exit day, you will be able to register a comparable UK trademark from your pending EUTM application. Such a UK application will retain the earlier filing date of the pending EUTM. You can also claim a valid international priority or UK seniority in your new UK application.
The UK application must be for the same trademark as the EUTM and the goods or services must be identical to or contained within the EUTM.
The UK application will be treated as a national UK application and examined under UK law.
If you do not wish your EUTM to be extended into a comparable UK trademark right, you may opt out. However, you may not opt out if you have used the trademark right in the UK or if you have assigned or licensed or entered into an agreement in relation to the trademark. In addition, you are not allowed to opt out if you have initiated litigation based on a comparable UK right.
The UK renewal due date will be the same date as in the EUTM or Madrid Protocol (MAP) registration from which it has been cloned.
If the EUTM or MAP has a due date after the exit date, but has been renewed prior to the exit date, then the UK registration will have to be renewed as well.
The renewal fees are to be paid to the IP Offices of the EUTM or MAP if the EUTM or MAP is within its six-month grace period at the time of the exit and the registration has not yet been renewed.
If renewal in respect of the new UK registration is due shortly after the exit date, a six-month grace period counting from the exit date will be granted without the need for payment of any late surcharges.
Licences, security interests and assignments
It is likely that a licence or security interest recorded against an EUTM will continue to have legal effect in the UK. Any licence or security interest that refers to an EUTM and allows acts in the UK will be treated as if it applies to the comparable UK trademark.
The period for recording a transaction on the UK register will be 12 months from exit day. This requires that the right was already registered in the EUTM register.
We strongly recommend that you contact your AWA attorney to discuss any actions that should be taken care of in an agreement. For example, it is a good idea to notify any licensees of the new right and to check that it does not conflict with any agreement.
If an EUTM was assigned to a new proprietor before exit day and if this has not been recorded in the EUTM register, the comparable UK trademark will be granted to the assignor. The assignor or the assignee will have the right after exit day to request the assignment of the comparable UK trademark to the assignee.
Use of the trademark in the UK
Normally, a trademark that has not been used for an uninterrupted period of five years in the UK is vulnerable to cancellation.
To provide a chance for EUTM owners to rectify any lack of use in the UK of their EUTM, it has been decided that use in the EU within five years before exit day will count as use of the comparable UK right.
Oppositions, litigations and injunctions
Cases that are ongoing on exit day where an EUTM has been a basis of the matter will proceed towards resolution on the law as it stood before exit day, that is as if the UK were still an EU member state. However, the UK will no longer be under the jurisdiction of the EU legal system after exit and later EU-wide injunctions will not apply to the comparable UK right. Injunctions existing on exit day against an EUTM will be treated as if they also apply to the comparable UK trademark.
Please do not hesitate to contact your trademark attorney at AWA if you have any questions or require additional information